Background and purpose of the guidance

In late 2024, the Supreme Court delivered its much-anticipated judgement concluding the long-standing dispute between Sky Ltd and SkyKick UK Ltd.

The judgement addressed the interpretation of the provision of the Trade Marks Act 1994 which prohibits the registration of trade marks filed in bad faith and considered whether overly broad trade mark specifications (particularly where the applicant has no genuine intention to use the mark across all claimed goods or services) could constitute bad faith.

You can read our report on the judgement here.

Following the judgement, the UK Intellectual Property Office (UKIPO) has issued new statutory guidance (Practice Amendment Notice PAN 1/25), effective immediately, outlining expectations for trade mark applicants and changes to examination practices.

Key expectations for trade mark applicants

1. Good faith requirement

Applicants must have a genuine intention to use the trade mark for all goods/services listed in their application. This includes broad terms that cover multiple subcategories; if the intention to use applies only to a subset, the broader term may be deemed filed in bad faith.

2. Fair and reasonable scope

Applicants should only seek registration for goods/services which represent fair and reasonable claims in the context of their business and for the purpose of indicating to consumers the origin of the goods/services being offered, or that could reasonably be offered in the future, by that business.

3. Context matters

What is good or bad faith cannot be prescribed and will depend on the circumstances of each case. For example:

• A large supermarket chain may justifiably file across a wide range of goods/services in many (or even all) classes.
• A small shoe retailer filing across a wide range of goods/services unrelated to its business may raise a suspicion of bad faith.

4. Areas requiring caution

Applicants should be particularly careful when:

• Covering vast numbers of goods/services in large numbers of classes.
• Covering broad terms where it would be more appropriate to subcategorise according to the nature of the business (e.g., computer software could be subcategorised to accounting software, gaming software, educational software, image manipulation software ).
• Copying and pasting standard broad terms (e.g. from the list of class headings published by the World Intellectual Property Organisation) that do not reflect actual or intended business offerings.

Changes to examination practice

1. Proactive scrutiny by examiners

Examiners will now assess whether a specification is “manifestly and self-evidently broad”. If so, a bad faith objection may be raised.

Each case will be considered according to the circumstances, and so it cannot be prescribed when bad faith objections will be raised. Time and experience will allow us to achieve a better understanding of this.

2. Responding to objections

Applicants will have two months to:

• justify the commercial rationale for the specification; or
• amend the specification to better reflect their business.

If the Examiner is not satisfied and the objection is not overcome, the application may be refused in whole or in part, but the applicant can request a hearing on the matter.

A note to opponents and cancellation applicants

If an opponent of a trade mark application, or a party applying to cancel a trade mark registration, relies on earlier rights that cover overly broad specifications or terms, they may be at risk of counterattack on bad faith grounds. Therefore, opponents and cancellation applicants are reminded that their cases should be based only on goods/services in their earlier rights that they could confidently defend in a bad faith counterclaim.

Takeaways

• Broad specifications are no longer acceptable without clear commercial justification.
• Applicants must align trade mark filings with actual or planned business activities.
• Existing rights within the five-year grace period to commence use should be reviewed carefully before enforcement.

This UKIPO guidance appears to support the integrity of the trade mark system. It should not have a detrimental impact on brand owners applying to register marks for which there is a genuine intention to use (now or in the future) on the goods/services applied for and their business plan/records can support this.

Wilson Gunn can provide businesses with the required expertise when it comes to trade mark filing and enforcement. If you require advice regarding trade marks, please get in touch and speak to one of our attorneys.